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Time to review your trademark specifications: Do you need to make an Article 28 declaration?

Intellectual Property Update

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17 MAR 2016

What's happening?

The amending Trade Mark Regulation 2016 [1] will come into force on 23 March 2016.

One of the things it will do is to codify the new approach adopted by OHIM (to be renamed the EUIPO) following the IP Translator case [2] regarding the scope of protection of trade mark specifications; in particular where trade mark specifications consist of class headings of the Nice Classification.

The Regulation will explicitly confirm that for European Union Trade Marks (EUTM, replacing the old name of CTMs) where a trade mark specification is drafted by reference to a Nice class heading or general terms, only those goods and services covered by the literal meaning of the class heading or general term will be protected.

This is consistent with the provisions of the Regulation dealing with new applications which require goods and services in respect of which protection is being sought to "be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought" (Article 28(2)).

What does this mean?

Proprietors of Community trade marks applied for prior to 22 June 2012, that are registered in in respect of an entire class heading, will have a six month grace period from 23 March 2016 to 23 September 2016 to make an Article 28(8) declaration.

Such declarations will allow trade mark proprietors to clarify from an alphabetical list which goods and services they had intended to seek to protect with their trade mark specification i.e. beyond those covered by the pure literal meaning of the class heading.

Action required

This is a one-off opportunity for you to review and clarify to your EUTM specifications. If a declaration is not filed, after the grace period expires, marks will automatically be limited to cover the goods and services literally described by the class heading only.

The onus is on Community trade mark proprietors to take action within the grace period.

It is worth auditing your trade mark portfolio to check whether you have used class headings in your CTM specifications and whether a declaration can and should be made.

We are happy to advise further and to assist with reviewing your trade mark portfolios. For further information, please contact [email protected].

________________________________________[1]Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community Trade Mark Regulation [2] Chartered Institute of Patent Attorneys v Registrar of Trademarks Case C-307/10

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DLA Piper is a global law firm with lawyers located in more than 40 countries throughout the Americas, Europe, the Middle East, Africa and Asia Pacific, positioning us to help clients with their legal needs around the world.

DLA Piper is a global law firm with lawyers located in more than 40 countries throughout the Americas, Europe, the Middle East, Africa and Asia Pacific, positioning us to help clients with their legal needs around the world.

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